Hague Agreement Provides Smoother Path to International Design Protection

By James R. Gourley

Beginning on May 13, 2015, a new and potentially cost-effective process for obtaining design protection in multiple countries became available.  Under the Hague Agreement Concerning International Registrations of Industrial Designs (the “Hague Agreement”), a single application filed in a Hague Agreement contracting state can be used to obtain design protection in any other contracting state.  If an applicant desires protection in multiple contracting states, the benefits can be significant.

Before the Hague Agreement, applicants were generally required to hire local counsel in each and every country where design protection was desired.  Local counsel would prepare the design application and related documents according to local law and practice, and pay the filing fees associated with the registration in their local currency.  Although it was possible to claim priority to earlier filed applications in most countries under the Paris Convention, it was not possible to avoid paying local counsel to prepare and file the application.

Hague Agreement contracting states, including the United States, will set up a central receiving office that will allow applicants to file a single design application and pay the filing fees for all contracting states where protection is desired at the time of filing.  The filing fees are paid in the applicant’s local currency.

The United States Patent and Trademark Office published its final rules implementing the Hague Agreement on April 2, 2015, and published the forms for applicants to use on May 13, 2015.  U.S. applicants can now simultaneously seek U.S. design patent protection and register the design in any other Hague Agreement contracting state.  One other change for US applicants under the Hague Agreement is that US design patents that issue from applications filed on or after May 13, 2015 will get an extra year of term – 15 years from the issue date instead of 14 – regardless of whether the applicant seeks design protection outside the US.

As of April 15, 2015, a total of 65 countries had acceded to the Hague Agreement.  Some countries or regions of interest to many U.S. applicants include the European Union, most individual European countries, Japan and Korea.  Other countries expected to accede in the near future include Canada and China.

The main benefit to a Hague Convention filing is the potential for cost savings.  Although the United States substantively examines design applications, many other countries do not.  For example, a European design application is not examined before registration.  In such countries, local counsel fees for obtaining registration can almost certainly be avoided using Hague Agreement procedures potentially saving the applicant thousands of dollars.

The main challenge an applicant will face is making sure the Hague Agreement application complies with all of the rules and regulations that govern design applicants in each individual contracting state where protection is sought.  For example, many countries have different requirements on how many figures are required or allowed.  Also, some countries require a written description of characteristic features the design, whereas the U.S. does not.  Including this written description in a U.S. application might unduly restrict the design patent’s scope if it is not carefully drafted.  Furthermore, Hague Agreement filings will force applicants to decide which countries to pursue protection in at the time of filing, rather than six months after the first filing as allowed under the Paris Convention.

The Hague Agreement will require patent practitioners to think strategically about whether and how to best take advantage of its streamlined processes.  Timely decisions and careful application drafting can allow applicants to increase the geographic scope of design protection at significantly reduced cost.  As new countries come onboard and individual countries’ laws are harmonized, the potential savings could increase even more.

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